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Terri Shieh-Newton, PhD

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[email protected]

+1.415.432.6084

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With over 25 years of experience, Dr. Shieh-Newton plays a strategic role for her clients as she guides their patent strategy, portfolio management and investments. Trained as an immunologist at Johns Hopkins School of Medicine, where she earned a PhD in Cellular and Molecular Medicine, she works with companies of all sizes in a wide range of life sciences, including Artificial Intelligence in life sciences and synthetic biology industries. She also has conducted hundreds of IP due diligence for companies and investors at all stages of investment. Dr. Shieh-Newton is known for her creative, business-savvy solutions and strategic thinking.

Dr. Shieh-Newton has significant experience in a wide range of life sciences, synthetic biology, and clean technology industries that allows her to provide creative solutions and render pragmatic business advice to her clients. Her practice focuses on global patent strategy, creation of valuable IP portfolios, preparation and prosecution of patent applications, comprehensive portfolio management, freedom-to-operate analysis, opinion work, inter partes review (IPR) and other post-grant proceedings, and complex landscape searches and white space analysis.

Dr. Shieh-Newton leads and conducts due diligences for both private and public companies and investors. Dr. Shieh-Newton has been the primary IP counsel on many deals on behalf of investment bankers and underwriters for IPOs and other capital market offerings totaling >$2 billion. Dr. Shieh-Newton has also worked on company-side reverse mergers, public offerings and mergers & acquisitions. She has also worked with private equity firms, hedge funds, and venture capitalists on due diligence assessment for investments and landscape analysis for formation of new funds and companies.

In addition, Dr. Shieh-Newton’s practice includes assessing freedom-to-operate positions and rendering patentability and invalidity opinions. She has extensive experience in evaluating patent landscapes to advise clients seeking to enter competitive markets, as well as advising clients on third-party challenges and risk mitigation strategies. Dr. Shieh-Newton has worked on biotechnology patent litigations, oppositions, and inter partes reviews.

Dr. Shieh-Newton has worked on a wide variety of technical areas including antibodies, biologics and biosimilars, immuno-oncology (including chimeric T-antigen receptors and engineered immune cells), immunotherapy, cell therapy, gene editing (e.g., CRISPR technology), stem cells, regenerative medicine, gene therapy, synthetic biology, microbiomes, enzymes, protein engineering, protein production and therapeutics, vaccines and adjuvants, diagnostics and biomarkers, cancer, biofuels, microbial & yeast engineering, industrial fermentation, production of target chemical using biological processes, quantum sensors, biological computations units, and artificial intelligence/machine learning for life science applications amongst other subject matters.

Dr. Shieh-Newton has worked with emerging companies, universities, as well as larger companies. Representative matters include work done for Roche, Genentech, 10x Genomics, DuPont/Danisco/Genencor, Regeneron, Ariosa, University of California, and Stanford University.

Dr. Shieh-Newton was trained as an immunologist at Johns Hopkins School of Medicine, where her doctoral research focused on natural killer cells and the early immune responses to HIV and SIV infection. Dr. Shieh-Newton was a student fellow with Nobel Laureates Dr. Joseph Goldstein and Dr. Michael Brown, researching farnesylated ras proteins.

In 2023, Dr. Shieh-Newton earned a certificate in Artificial Intelligence in Pharma and Biotech from MIT Sloan School of Management.

Dr. Shieh-Newton is in leadership positions at the firm, currently serving on the firm’s Policy Committee (i.e., Executive Committee). She founded and is co-chair of the firm’s AI Life Sciences IP group. She also serves as co-chair of the Minority Attorneys & Agents affinity group and serves on the Equity Advisory Committee and Women’s Initiative Steering Committee. 

Dr. Shieh-Newton was recognized on the Chambers USA list for Patent Prosecution (2022 - 2024), LMG Life Science’s “Patent Strategy Attorney of the Year – California” (2023), selected as one of the Top 250 Women in IP by Managing Intellectual Property (2022 - 2024), named to the National Law Journal's Intellectual Property Trailblazers list and also as a finalist for MIP's National Practitioner of the Year - Patent Prosecution. She has also been recognized as among the “100 Most Influential Women in Business in the Bay Area” by the San Francisco Business Times, identified annually among the “World’s Leading Patent Practitioners” in Intellectual Asset Magazine’s Patent 1000, and recognized in The Legal 500 “United States for Healthcare: Life Sciences.”

viewpoints

Mintz Levin is running a series of webinars to educate our clients and friends on developments in the biosimilars space.  A cross-practice team of professionals from the IP, Health and Litigation sections are collaborating to present on Patent Prosecution, Health Regulatory, FDA, Patent Litigation, Transactional and Products Liability issues.
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On June 12, 2015, the Federal Circuit affirmed the finding of U.S. District Court for the Northern District of California (“District Court”) that the method claims in U.S. Patent 6,258,540 (‘540 patent) for detecting paternally-inherited cell-free DNA (“cffDNA”) in maternal plasma or serum were not directed to patent eligible subject matter, and, therefore, were invalid. 
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On June 12, 2015, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed the Northern District of California’s finding that the method claims in U.S. Patent 6,258,540 (‘540 patent) for detecting paternally-inherited cell-free fetal DNA (“cffDNA”) in maternal plasma or serum were invalid because these claims were not directed to patent eligible subject matter (Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 2014-1139, 2014-1144 (Fed. Cir., June 12, 2015)).
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In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
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The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. While the AIA alters U.S. patent practice in several ways, perhaps the most significant change brought about by the law is the switch from a “first to invent” to a “first inventor to file” system, largely for purposes of harmonizing U.S. practice with the majority of other countries.
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News & Press

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Our Intellectual Property Practice earned national recognition in the 2024 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with four firm-wide rankings and 14 individual attorney recommendations, including a gold ranking for Intellectual Property Chair Michael Renaud.

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Mintz announced today that 42 of its practices and 83 of its attorneys earned recognition in the 2024 edition of Chambers USA, a guide to the country’s leading law firms. Of those included in the guide, 18 attorneys and seven practice areas were awarded Chambers’ highest ranking, Band 1. The firm obtained new listings in three practice areas and 10 of its lawyers were recognized for the first time.

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San Francisco Member Terri Shieh-Newton, PhD spoke to the Wall Street Journal about the use of AI in the life sciences industry, specifically on how biomedical startups are using AI to predict patient responses to cancer treatments. Terri noted that while AI allows researchers to pull diverse sets together, humans must make careful decisions about the data sets they use to train the algorithms.

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Member Terri Shieh-Newton, PhD spoke to PharmaVoice about ethical issues in the biopharma industry, particularly as artificial intelligence presents new challenges around safeguarding data and privacy.

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Mintz is pleased to announce that life sciences practitioners from our US and Canada offices were honored at the 2023 LMG Life Sciences Americas Awards.

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Health care organizations deploying AI face complex questions involving diversity, regulations, and ownership of innovations made with AI tools. In an interview with Healthcare IT News, Mintz Member Terri Shieh-Newton shared insights for providers on managing machine learning integration of racial diversity, gender, and genetic information and identifying inventorship of IP developed with AI.

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In a Q&A with MobiHealthNews, Member Terri Shieh-Newton discussed intellectual property and AI, and shared her thoughts on what companies should think about when determining ownership of intellectual property.

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BOSTON, MA – In the 2023 edition of 'IP Stars,' published by Managing Intellectual Property (Managing IP), Mintz achieved recognition in two nationwide categories and received acknowledgment for the exceptional performance of nine of its attorneys.

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SAN FRANCISCO – Mintz is proud to announce that the National Law Journal named Member Terri Shieh-Newton, Ph.D., a nationally recognized IP attorney and a leading woman in the life sciences industry, a 2023 Intellectual Property Trailblazer. The IP Trailblazers list recognizes professionals working as agents of change in their practice areas.

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BOSTON– Mintz’s award-winning Intellectual Property (IP) Practice again earned national recognition in the 2023 edition of IAM Patent 1000 – The World’s Leading Patent Practitioners. The guide recognized Mintz with three firm-wide rankings and 10 attorneys received a total of 11 individual recommendations.

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BOSTON – Mintz has earned top rankings in the 2023 edition of Legal 500 United States guide. The firm is recognized in 14 practice categories, and 59 individual attorneys are also recognized in the guide, some in more than one category.

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BOSTON –Mintz announced today that 39 of its practices and 81 of its attorneys earned recognition in the 2023 edition of Chambers USA, a guide to the country’s leading law firms.

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SAN FRANCISCO – Mintz is pleased to announce that Member Terri Shieh-Newton, Ph.D., a nationally recognized IP attorney and a leading woman in the life sciences industry, has once again been selected for inclusion in the 2023 “Top 250 Women in IP” list by Managing Intellectual Property.

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NEW YORK – Mintz represented the syndicate of underwriters led by William Blair & Company, L.L.C., in the public offering of 17,242,000 shares of common stock of Viking Therapeutics, Inc. (“Viking”) (Nasdaq: VKTX), a clinical-stage biopharmaceutical company focused on the development of novel therapies for metabolic and endocrine disorders, at an initial offering price of $14.50 per share.

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Member Terri Shieh-Newton spoke to Managing IP about the potential rise of biosimilar patent litigation in the U.S.

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Mintz continues its ongoing commitment to ensuring the firm is an equitable workplace, establishing a new Diversity, Equity and Inclusion (DEI) committee that reports directly to the firm's main decision making body, the Policy Committee. The new Equity Advisory Council (EAC) will be responsible for driving equity for the firm’s attorneys, especially women, attorneys of color and LGBTQ+ attorneys.

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Mintz is pleased to share that two attorneys and the firm’s Patent practice have been shortlisted in the 2022 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year.

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Corporate Counsel profiled Mintz Member Terri Shieh-Newton, PhD, as one of its 2020 Women, Influence & Power in Law Awards honorees in the Law Firm Awards: Collaborative Leadership category.
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In the latest guide, Mintz garnered rankings as a top national firm in eight practice areas, and 32 firm attorneys were individually recognized.
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The March 17 edition of the Skilled in the Art newsletter published by Law.com quoted Mintz Member Terri Shieh-Newton on the recent closing of the United States Patent and Trademark Office (USPTO) to the public due to COVID-19, and its impact on applicants and examiners.
Mintz’s Terri Shieh-Newton shares her insights on gender equity, how to fix USPTO, and the most exciting thing in biotech today.
This feature story looks at a recent U.S. Patent and Trademark Office (USPTO) study; primarily focusing on the increased share of U.S. patents that include at least one woman as an inventor. This number has tripled in the last 30 years. In spite of this increase, the article goes on to note that female inventors still only make up slightly more than 10 percent of all inventors on U.S. patents granted in 2016. Mintz Member Terri Shieh-Newton is quoted providing commentary in the piece.

Mintz represents NuCana, which completed its approximately $114 million initial public offering. The United Kingdom-based clinical-stage company focuses on improving treatment outcomes for patients with cancer.

Subject Matter Eligibility Under 35 U.S.C. § 101 – Life Sciences

June 1, 2016

Terri Shieh-Newton, a Mintz Member, authored this IP Frontline column discussing the USPTO's issuance of a memorandum to the “Patent Examining Corps to provide further Examiner instructions relating to subject matter eligibility under 35 U.S.C. § 101.”  
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Events & Speaking

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Mar
20
2024
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Speaker
Mar
11
2024
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Panelist
Moderator
May
9
2022
Conference Reference Image
Speaker
Apr
12
2022

Built with Biology Conference 2022

formerly SynBioBeta

Oakland Marriott City Center

Conference Reference Image
Speaker
Sep
30
2020

SynBioBeta 2020

View the Panel Recording

Conference Reference Image
Moderator
Oct
1
2019

SynBioBeta 2019

SVN West, 10 S Van Ness Ave, San Francisco, CA 94103

Moderator
Nov
1
2018

Wine & War Stories

Domenico Winery, 1697 Industrial Road, San Carlos, CA

Speaker
Oct
3
2018
Moderator
Oct
2
2018

Empowering Women Change-Makers in The Synthetic Biology Industry

Mission Bay Conference Center, San Francisco

Speaker
Oct
3
2017

SynBioBeta SF 2017

SynBioBeta

San Francisco, CA

Panelist
Jun
3
2015

Protecting Your IP in the Age of the Collaborative Economy

San Francisco Center for Economic Development

San Francisco, CA

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With over 25 years of experience, Dr. Shieh-Newton plays a strategic role for her clients as she guides their patent strategy, portfolio management and investments. Trained as an immunologist at Johns Hopkins School of Medicine, where she earned a PhD in Cellular and Molecular Medicine, she works with companies of all sizes in a wide range of life sciences, including Artificial Intelligence in life sciences and synthetic biology industries. She also has conducted hundreds of IP due diligence for companies and investors at all stages of investment. Dr. Shieh-Newton is known for her creative, business-savvy solutions and strategic thinking.

Recognition & Awards

  • Finalist for Managing Intellectual Property's National Practitioner of the Year – Patent Prosecution (2022, 2024) & named Patent Star (2024)

  • Recognized as one of the Top 250 Women in IP by Managing Intellectual Property (2022 - 2024)

  • Winner of Patent Strategy Attorney of the Year – California in LMG Life Sciences (2023)

  • Named in the National Law Journal as an Intellectual Property Trailblazer (2023)

  • Recognized in Chambers USA: California – Intellectual Property: Patent Prosecution (2022 - 2024)

  • Listed on IAM Patent 1000 “World’s Leading Patent Practitioners” (2020 - 2023)

  • Recognized by The Legal 500 United States for Healthcare: Life Sciences (2019 – 2023)

  • Recognized in Business Today's list of 10 Most Influential Intellectual Property Attorneys in California for Patent Prosecution (2023)

  • Selected as law firm honoree in the Collaborative Leadership category of Corporate Counsel’s Women, Influence & Power in Law Awards (2020)

  • Selected as one of the 100 Most Influential Women in Business in the Bay Area by the San Francisco Business Times (2020)

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